No app for that: Apple’s false ad suit over Amazon Appstore thrown out

Apple pushes ahead with quixotic quest to ban Amazon's use of "Appstore."

One of the more unusual tech clashes of the past year or two has involved Apple's crusade to control how its competitors use the term "app store." The company has sparred with Microsoft and other competitors in both US and European trademark offices over whether Apple should be able to trademark either "app store" or "appstore," since both apps and stores have been around for quite a while now.

In the case of Amazon's Appstore, Apple has actually moved the battle into a federal court. So far, its quest to stop Amazon from using the phrase "Appstore for Android" has been going nowhere. That trend continues today, as Apple has lost entirely on one of its claims—that Amazon's use of Appstore went beyond a trademark violation and actually constituted false advertising.

Amazon moved to throw that allegation out without a trial, and today it succeeded. US District Judge Phyllis Hamilton, who is overseeing the case, issued a 9-page order [PDF] in which she reviews Apple's arguments as to why the company should be allowed to move ahead with a false advertising case.

Apple pointed to TrafficSchool.com v. eDriver Inc., a case involving a company whose use of websites that contained "dmv.org" was found to falsely imply affiliation with the California Department of Motor Vehicles. It also tried to use a 1983 case called Eastern Airlines Inc v. New York Air Lines Inc., in which plaintiff Eastern Airlines was able to win a false advertising case based on a competitor's description of "air shuttle" services, even though it could not trademark "shuttle."

But Judge Hamilton found those examples unconvincing and has thrown out Apple's false advertising claim. "Apple has presented no evidence of any Amazon website or advertisement that attempts to mimic Apple’s site or advertising," she wrote. "The court finds no support for the proposition that Amazon has expressly or impliedly communicated that its Appstore for Android possesses the characteristics and qualities that the public has come to expect from the Apple APP STORE and/or Apple products."

Since she found so little merit in the false advertising claims, it's hard to imagine Hamilton is going to see the remaining trademark case in a less skeptical light. But that portion of the case is moving ahead and is currently scheduled for a jury trial in August of this year.

61 Reader Comments

When is everyone going to learn, you don't fight a land war in Afgani - er, I mean, you don't have a jury trial vs Apple. There are way too many pants on head retards who love Apple and will seemingly find in their favor on basically any absurd thing they decide to bring suit over.

Oh, for... can someone please bury Apple already? I have seriously never seen a corporation (in tech, can't speak to other industries) act in a more blatantly anti-competitive fashion than Apple has been these past couple of years. They are the single biggest problem in the tech industry right now.

I am not a lawyer, but even if Apple were to win this case, there is a provision in copyright law that says terms can become generic if the general populace uses it enough. "Aspirin" is still copyrighted in Germany and it lost its trademark over here but that was due to losing the war, but this sort of thing can happen, such as "photoshopping" something.

Oh, for... can someone please bury Apple already? I have seriously never seen a corporation (in tech, can't speak to other industries) act in a more blatantly anti-competitive fashion than Apple has been these past couple of years. They are the single biggest problem in the tech industry right now.

I wouldn't go that far. But for every thing they do right, they end up doing something dumb like this which makes them look petty and desperate. Like "we've reached our peak, and we're out of ideas. So, we need to find ways to cash in on every petty-anty bullshit thing we can".

Correct me if I'm wrong, but I always thought that on the desktop Apple was the only one using the word "Application", whereas other platforms where using "Program". When the iPhone was released, it made sense for Apple to call the small applications "Apps". But why did other smartphone platform start to use the word "App", if not to jump on the iPhone bandwagon? If that's the case, this suit made complete sense.

But my memory might be wrong about the application vs program vs anything else terminology, and maybe other (mobile?) platforms used the App word before Apple, in which case my point is moot.

You're right in that your memory is wrong. "Application" and "program" have been used essentially interchangeably on computers for a very very long time now.

Correct me if I'm wrong, but I always thought that on the desktop Apple was the only one using the word "Application", whereas other platforms where using "Program". When the iPhone was released, it made sense for Apple to call the small applications "Apps". But why did other smartphone platform start to use the word "App", if not to jump on the iPhone bandwagon? If that's the case, this suit made complete sense.

But my memory might be wrong about the application vs program vs anything else terminology, and maybe other (mobile?) platforms used the App word before Apple, in which case my point is moot.

It's most likely my screwed up memory but I get the sense that "back in the days" application was more tech talk and program was more common mans talk.

It's most likely my screwed up memory but I get the sense that "back in the days" application was more tech talk and program was more common mans talk.

What counts as "common" man? I don't work in either the IT or computing industry but I have a folder that dates back to 2000 called "App Files" that contains installation files for various programs (for use after I re-install Windows). It didn't take a whole lot of imagination for me to shorten Application to "App" either.

I am not a lawyer, but even if Apple were to win this case, there is a provision in copyright law that says terms can become generic if the general populace uses it enough. "Aspirin" is still copyrighted in Germany and it lost its trademark over here but that was due to losing the war, but this sort of thing can happen, such as "photoshopping" something.

In the US (since you mentioned Germany I'm not sure where in meatspace you are located) trademark and copyright are two entirely separate things. Trademark is subject to dilution -- the two textbook examples being "xerox" and "kleenex" I suppose -- and has applicability that's limited to specific industries. Copyright is not subject to dilution and is universal.

Edit - sorry to be pedantic, but it's a personal peeve when people conflate the two -- usually to muddy the water of copyright reform discussions.

To go back on topic - IMHO the terms "app" and "app store" (with and without the space) are totally generic, especially given that "app" is just a shortening of the already generic term "application."

Trademark, not copyright. And yes, you can trademark a "common" word in a specific context.

Like "Apple," for instance, or the image of an Apple, in relation to computers.

Quite a big deal when they entered the business of music sales, given the presence of Apple Records (they had already been sued for trademark infringement when they were only in the business of computers).

Sure, I never meant it was an apple invention. Just that Apple was the only one using this word specifically to describe its softwares. On the mac there was an "Application" directory, whereas on windows the start menu listed "Programs". I don't remember Microsoft using the word "application" anywhere in its OS.

There's been an "Application Data" folder in every user's profile at least since Windows XP (maybe earlier, it's been too long since I used Windows 2000 or NT). Starting with Vista it was shortened to AppData, before the iPhone was ever released. That's just an example I came up with off the top of my head, I'm sure there are more.

Oh, for... can someone please bury Apple already? I have seriously never seen a corporation (in tech, can't speak to other industries) act in a more blatantly anti-competitive fashion than Apple has been these past couple of years. They are the single biggest problem in the tech industry right now.

The way trademark law is structured, if you don't try to protect it, you lose it. As far as Apple or any corporation is concerned, there's no point it registering a trademark if you're not going to try to defend it—even if it makes some Internet commenter feel as though it makes the company "more blatantly anti-competitive" or "the single biggest problem in the tech industry." (Neither of which is actually true.)

You're missing the forest from the trees, here. Yes, it's true that "there's no point in registering a trademark if you're not going to try to defend it." However, none of that excuses Apple's attempt to register a clearly generic term in the first place. I could no less go out and register the trade name "Ladder Store" and expect to maintain exclusive rights against any store that sells ladders. The fact of the matter is that Apple and counsel should have known from the beginning that APP STORE is not a protectable mark.

Any subsequent attempt to defend an unprotectable mark is an attempt to rewrite or pervert the law through pedantry to work towards Apple's business favor. They are attempting to use the law against its very meaning to cause economic damage to Amazon, their competitive. And that is in and of itself "more blatantly anti-competitive."

While you may disagree, there is a lot of evidence -- especially given the sheer number of patent troll article cases that flow through Ars Technica -- that anti-competitive practices by tech businesses who eschew or bend the law to harm their competition is, in fact, the "single biggest problem in the tech industry." Apple is doing that here. They have practically no case, but they are attempting to use their deep pockets to reposition the law to their favor and thus disadvantage their competitors. That is wrong, no matter what company is doing it.

Considering that your tag highlights you as Ars Staff (and an associate writer), I might suggest responding to comments to which you object with something a little more personable and intellectually engaging than labeling it as "some Internet commenter['s] feel[ings]." First, if you're actually classifying the post as the author's "feelings" then it is obviously subjective opinion and your comment about it being "untrue" has absolutely no substantive value. Second, the dismissive treatment, especially in the context of sounding unapologetically pro-Apple, makes you sound flippant and biased, as if you're trying to diminish the veracity of the OP's statement by reclassifying his otherwise helpful contribution as little more than how "some Internet commenter feel[s]." While possibly unintentional, if you're advertising yourself as a writer and affiliated with this website, it comes across as pejorative and uncouth.

While i have been reading the ARS forums for a long time, i have rarely been compelled to create a login to reply to a post. With that out of the way, all i have to say is well put Warhawke, well put.o

Oh, for... can someone please bury Apple already? I have seriously never seen a corporation (in tech, can't speak to other industries) act in a more blatantly anti-competitive fashion than Apple has been these past couple of years. They are the single biggest problem in the tech industry right now.

While Apple are despicable and have reached the point where I would cheer if they were to cease to exist, it is hardly true that they are alone. Microsoft were despicable in the past, IBM (look at their record in Nazi Germany...) and even you want to widen the 'tech' moniker slightly to biotech then Monsanto are a strong contender for being despicable in this particular way (copyrighting seeds then suing farmers if their seeds spread to their lands).

There are many many corporations that the world would be a better place if they were killed (I think that's the correct word given they're legally people). I'm against killing and the death penalty in general but corporations have so much power that their potential for evil is limitless, they commit murder (see private security contractors in warzones, pharmaceuticals who lie about their drugs, chemical accidents etc.). Even when they are not committing that level of evil they still kill people in the pursuit of profit (see Apple and most other tech companies who abuse third world countries for labour). I think until CEOs, like Steve Jobs (who willingly created a climate of last minute rushes which harmed workers) are sent to prison and legally responsible for the monstrous organisations they head and companies are legally dismantled when they abuse the marketplace then we won't have any improvement.

edit. Monsanto not Haliburton. There are just too many of them to keep track

While i have been reading the ARS forums for a long time, i have rarely been compelled to create a login to reply to a post. With that out of the way, all i have to say is well put Warhawke, well put.o

Agreed.

Unfortunately there are a cadre of writers at Ars that simply can not be trusted about most of what they say about Apple.

Correct me if I'm wrong, but I always thought that on the desktop Apple was the only one using the word "Application", whereas other platforms where using "Program". When the iPhone was released, it made sense for Apple to call the small applications "Apps". But why did other smartphone platform start to use the word "App", if not to jump on the iPhone bandwagon? If that's the case, this suit made complete sense.

But my memory might be wrong about the application vs program vs anything else terminology, and maybe other (mobile?) platforms used the App word before Apple, in which case my point is moot.

It's most likely my screwed up memory but I get the sense that "back in the days" application was more tech talk and program was more common mans talk.

Program is a more general term, application is more specific. All applications are programs, but not all programs are applications. For example, utilities and games are also programs.

You're missing the forest from the trees, here. Yes, it's true that "there's no point in registering a trademark if you're not going to try to defend it." However, none of that excuses Apple's attempt to register a clearly generic term in the first place. I could no less go out and register the trade name "Ladder Store" and expect to maintain exclusive rights against any store that sells ladders. The fact of the matter is that Apple and counsel should have known from the beginning that APP STORE is not a protectable mark.

I can't find the web site that covered it, but they tried 4 times to ram it through, and got it only on the technicality that they had like a high number of app store downloads so it reached some stupid threshold.

But just so you know, they filed their "siri" patent 10 times before someone at the patent office accepted it. It has nothing to do with siri either.

And they put it to work 2 months later suing Samsung's Galaxy Nexus over it.

I am not a lawyer, but even if Apple were to win this case, there is a provision in copyright law that says terms can become generic if the general populace uses it enough. "Aspirin" is still copyrighted in Germany and it lost its trademark over here but that was due to losing the war, but this sort of thing can happen, such as "photoshopping" something.

You're missing the forest from the trees, here. Yes, it's true that "there's no point in registering a trademark if you're not going to try to defend it." However, none of that excuses Apple's attempt to register a clearly generic term in the first place. I could no less go out and register the trade name "Ladder Store" and expect to maintain exclusive rights against any store that sells ladders. The fact of the matter is that Apple and counsel should have known from the beginning that APP STORE is not a protectable mark.

I can't find the web site that covered it, but they tried 4 times to ram it through, and got it only on the technicality that they had like a high number of app store downloads so it reached some stupid threshold.

But just so you know, they filed their "siri" patent 10 times before someone at the patent office accepted it. It has nothing to do with siri either.

And they put it to work 2 months later suing Samsung's Galaxy Nexus over it.

"App Store" made it through because Apple claimed it as a descriptive mark. Descriptive marks are not subject to trademark unless you can show that the mark has acquired secondary meaning in the marketplace (i.e. a normal person immediately associates the mark with the brand, rather than what the words of the mark say). An example would be Starbucks' "frappuccino" because it combines a descriptor (frappe i.e. "cold") with the product name (cappuccino). While normally not protectable, because everyone thinks of a frappuccino as a Starbucks product it is afforded trademark protection, because the basis of the Lanham Act is to prevent fraud and consumer confusion. If Dunkin' Donuts started selling frappuccinos, I might think that they had developed a partnership with Starbucks Coffee.

Better stated, a descriptive mark has to "describe[] a function, use, characteristic, size, or intended purpose of the product." Two Pesos 505 U.S. 763, 769 (1992). APP STORE doesn't do that. It merely describes the product itself (a store for apps) rather than any function, use, characteristic, etc. of the product. Any lawyer should know this, and I'm sure Apple's lawyers explained the risks of pursuing trademark over a clearly generic term. But as a company you have to understand the difference between rejection based on the disparate whims and random draw of the USPTO and rejection based on an extremely clear and textbook definition of trademark law. Simply pulling the slot machine lever until you manage to convince a USPTO reviewer that "App Store" is descriptive and not generic is far more dubious than attempting to file "Siri" repeatedly, where Siri clearly qualifies as an "arbitrary" mark.

They're welcome to file for the trademark until it goes through, but their actions cease being ethical when they ignore the application of the law and file suit anyway to achieve a marketing agenda. This used to happen so much in free speech that they started calling these kinds of suits SLAPPs, and states had to enact special anti-SLAPP legislation to make it go away. Hopefully the tech industry can adjust their attitude before legislative reform is needed, but I'm not holding my breath.

Edited for clarity.

Edit 2:

enpher wrote:

What would be the implication for other generic store names like Dollar Store?

Dollar Store would still be a generic mark, as it always has been. You might even have a better claim for Dollar Store being descriptive because it describes a "characteristic" of the store (that everything is a dollar) rather than the store itself (you aren't selling dollars -- the Feds get mad when you try). So possibly if you started a company called Dollar Store, and everyone recognized your name as the penultimate Dollar Store, then you might have acquired secondary meaning.

But this is really hard to show, so most stores call themselves something less descriptive and more suggestive, such as "Dollar Tree" or "Dollar General."

"application" has been in common use on multiple non-Apple platforms since the 80s.

Couldn't be more irrelevant. No one is claiming a trademark on the word "Application," "App," "Applet," or "Store." The trade mark claim is for the use of "app store."

Actually "application" is quite relevant. You can't trademark a generic word or a combination of generic words. I can't trademark "Bread Cracker" crackers any more than I could trademark "Cracker" crackers. Simply adding generic words doesn't make it any more protectable.

Oh, for... can someone please bury Apple already? I have seriously never seen a corporation (in tech, can't speak to other industries) act in a more blatantly anti-competitive fashion than Apple has been these past couple of years. They are the single biggest problem in the tech industry right now.

*snorts* Yah.....right now. Try the last 5 years or whenever Jobs was first diagnosed with cancer. They started the behavior then. The problem is people haven't been paying attention. Apple has always been a big 'o bag of dicks. They've just stopped being coy about it is all. I blame their userbase for fostering the behavior.